PART 2. For Employees, Contractors and Guest Researchers of State System universities: Contents

Transcription

1 PART 2. For Employees, Contractors and Guest Researchers of State System universities: Bloomsburg, California, Cheyney, Clarion, East Stroudsburg, Edinboro, Indiana, Kutztown, Lock Haven, Mansfield, Millersville, Shippensburg, Slippery Rock and West Chester Universities of Pennsylvania. Contents Overview Applicability Ownership of Intellectual Property Invention & Technology Disclosures Conflict of Interest/Start-Up companies Royalty Distributions This Inventor s Guide for Employees, Contractors and Guest Researchers is Part 2 of a three-part document. Part 1 of the Inventor s Guide provides comprehensive information on the Technology Transfer and Commercialization process within the State System universities inclusive of details that pertain only to faculty, who are the primary researchers and inventors on System campuses. When Part 1 specifically names faculty, those statements may not apply to other employees, contractors, consultants and guest researchers. This Part 2 supplements Part 1 and provides additional information that relates to unique issues that university employees, contractors, consultants and guest researchers who may perform research or development work that leads to inventions. This Part does NOT cover any student intellectual property created as part of an academic program. See Part 3 for such information. The content of Part 2 was previously published in the Technology Transfer and Commercialization Guide for PASSHE Non-Faculty Personnel, May It contains updates based on specific experience and university input over the years.

2 Overview Readers should first review Part 1 of the Inventor s Guide. It provides information on the entire Technology Transfer and Commercialization process for inventors. Within the entire Part 1 the terms of the faculty s APSCUF Collective Bargaining Agreement are referenced often but these do not apply to non-faculty and student employees, or guest researchers, so this Part of the Inventor s Guide will address the differences for employees, contract employees, student employees, consultants and guest researchers, where they exist. However, Part 1 is the primary guide to the process and university services. Applicability WHO IS COVERED BY PART 2? Covered individuals include the following individuals who utilize university resources and facilities: University staff, including managers, administrators and all other staff classifications (excluding clerical and non-technical personnel) Contract employees and consultants University students who are employed or otherwise compensated at their university through mechanisms such as stipends, tuition waivers, wage payroll, graduate assistantships, or other employment classifications used when hiring students, (excluding clerical and non-technical personnel). Guest researchers, such as emeritus or retired faculty, visiting scholars and scientists, and industrial research collaborators, that are using university facilities and who are not a permanent or temporary faculty, employee or student. Excluded from the above categories and from coverage are those individuals who are using university research facilities pursuant to a facility use agreement by which the university is compensated for use of the facilities, including equipment, personnel, and other costs. ARE THERE ANY EXCEPTIONS TO THE APPLICABLE COVERAGE OF THESE GUIDELINES? Exceptions may be necessary when the requirements of external sponsors or employers claim a share in ownership of intellectual property created using university resources, such as guest researchers who are fulltime employees of other institutions or businesses and collaborate on research with faculty or university employees. In those situations, the other party may have employment policies that apply to the guest. This is referred to as the Other Employers exception. In these cases, ownership of intellectual property resulting from the joint research is determined by a written agreement entered into prior to the collaboration. The creation of joint intellectual property involving guest researchers may bring a unique set of legal obligations with them. WHAT TYPE OF INTELLECTUAL PROPERTY IS COVERED? All intellectual property created by non-faculty employees, contractors and consultants, including student employees, during the course of normal and assigned duties, is covered by these guidelines.

3 Traditional scholarly work (such as, publications, works of art, recordings, and software) created by guest researchers (emeritus/retired faculty, visiting scholars/scientists and research collaborators) is not covered; however inventions made by these individuals with the use of university resources are covered. The Inventor s Guide as a whole is primarily concerned with ownership and commercializing new technology and inventions that meet the definition of a patentable invention under the standards of the US Patent Law and are created by university faculty, employees and students. WHO SIGNS THE EMPLOYEE INTELLECTUAL PROPERTY AGREEMENT? Only university employees, including students, who work in a capacity or position that could conceivably lead to an invention that qualifies for patent protection sign an Intellectual Property Agreement. Such positions include researchers, software coders, science and technology lab assistants and research assistants. Employees in administrative and service jobs do not need to sign an Intellectual Property Agreement. This agreement assigns any patentable inventions to the university, should it decide to accept it. The Inventor s Guide Part 1 and Part 2, provides the procedures and services governing employee created inventions and patents. The Agreement is signed upon the start of employment in the designated positions. Ownership of Intellectual Property WHO OWNS INTELLECTUAL PROPERTY CREATED BY COVERED PERSONS? In simple terms the university owns any intellectual property created by non-faculty employees, including student employees, contract employees and consultants during the course of their normal and assigned duties. However a distinction between inventions and copyright work is important. If the intellectual property is employee/contractor/consultant created copyright work, then the university has outright ownership. Contractor or consultant inventions can be handled the same as employees, predicated on a written agreement that addressed intellectual property ownership in a manner consistent with these guidelines. The university may claim ownership of inventions made solely or jointly by all non-faculty employees, contractors and consultants, as a result of research or investigation which has made ANY use of university resources, support or facilities. Written agreements with contractors and consultants will address intellectual property ownership in a manner consistent with these guidelines. The university s decision of claim of ownership is implemented in the following manner. 1. The university evaluates the invention in question in a fairly comprehensive manner before accepting assignment and investing in protection and commercialization. This evaluation will assess the commercial value, and the possibility and costs of patent protection for the invention. After evaluation the university may elect to not accept ownership and not file for patent protections. 2. The university achieves ownership of such inventions through legal assignment from the inventor(s) at the time the non-provisional patent is filed The inventions are assigned to the university by the inventor(s) in exchange for licensing-revenue sharing plan between

4 the university and the inventor(s). The university s decision of ownership will not affect inventorship. The ownership of scholarly work created by guest researchers (emeritus/retired faculty, visiting scholars/scientists and research collaborators) is owned by its creators; however inventions made by these individuals with the use of university resources will be owned by the university unless a prior written agreement is negotiated otherwise or the exception for other employers applies. WHAT TYPE OF INTELLECTUAL PROPERTY IS MOST COMMONLY CREATED BY EMPLOYEES? Much of the intellectual property that you create as part of work duties are works of authorship that are covered under copyright protections, such as reports, presentations, databases and software code. The university s Tech Transfer services do not typically make any effort to protect copyright works because taking legal steps to do so is usually unnecessary. However, student employees who are working with faculty as research assistants may create or co-create inventions. In addition, deans of the university may have research grants that are administered by the university that could possibly result in inventions. Their inventions are handled as described above: evaluation, assignment, patenting, licensing and revenue sharing. Copyright is discussed more thoroughly in Part 1. WHAT IS WORK FOR HIRE? Work-for-Hire is a concept defined in the US. Copyright laws. Most if not all intellectual property created by non-faculty employees, contractors and consultants will fall within this category. A work for hire includes works that are: (1) prepared by an employee within the scope of his or her employment; or (2) specially ordered or commissioned by the university. It only covers the types of intellectual property that can be protected by copyright, i.e. works of authorship. As the employer the university retains the copyright of all employee created works of authorship as works-for-hire, but may grant the creator permission for limited use of material. Specific Work-forhire agreements are NOT necessary to secure university ownership of works created by non-faculty employees. Contractors and consultants have to execute the appropriate agreement that releases copyright to the university prior to the start of work. The agreement typically takes the form of Service Purchase Contracts. However, other forms may be acceptable as long as they contain an assignment of intellectual property. DOES THE UNIVERSITY HAVE ANY OTHER STANDARDS THAT RELATE TO INTELLECTUAL PROPERTY? Non-faculty employees, contractors and consultants, and guest researchers may not use university copyright material or other intellectual property owned by or assigned to the university without specific permission. For example, employees cannot use the university s logo for personal activities. WHAT IF A STUDENT WORKS "FOR FREE" IN A UNIVERSITY LABORATORY OR RESEARCH PROJECT TO GAIN EXPERIENCE? If the student is not receiving compensation they are covered under the guidelines in Part 3. If students are receiving no pay or compensation and imposing no costs on the university by receiving

5 assistance or faculty collaboration, the Intellectual Property will be owned by the student. However, if this student is receiving material support from the university, or collaborating with faculty or participating in a special situation in a for-credit course, then the university or a third party has rights to the Intellectual Property. This is covered in detail in Part 3. WHAT IF I CREATE AN INVENTION ON MY OWN TIME? If the invention is totally unrelated to your employment responsibilities and is created wholly on your own time, and without the use of university facilities, it MAY belong to you. Each situation will be disclosed by the employee and examined by the university. Your own time means time other than that required to fulfill the normal and assigned functions of your position with the university, including hours outside of normal business hours. university facilities means use of any facility available to the inventor-employee as a direct result of the inventor s affiliation with the university (including computing facilities and networks), or any facility available under the university s policies on co-operative use of research equipment, or policy on use of facilities by emerging technology enterprises, and which would not otherwise be available to a non-university employee. However, inventions created on one s own time without use of university resources does not include inventions that are based upon or derived from intellectual property that the university owns or to which it has a potential ownership claim. WHAT IF I CREATE COPYRIGHTED WORK ON MY OWN TIME? In pursuit of outside interests, university employees may create any number of copyright works on their own time as described above, such as books, music, artistic works, or software. As long as the work is not part of the employee s normal or assigned university duties, then s/he owns the work outright. However employees may not use university intellectual property in their own works without specific permission. Inventions & Technology Disclosures WHAT HAPPENS IF AN EMPLOYEE OR OTHER COVERED INDIVIDUAL CREATES AN INVENTION? The overall process utilized by employees, contractors and consultants as well as guest researchers is the same process that is described in Part 1. WHEN SHOULD EMPLOYEES, CONTRACTORS AND CONSULTANTS COMPLETE AN INVENTION AND TECHNOLOGY DISCLOSURE? You should complete an Invention and Technology Disclosure whenever you feel you have discovered something unique with possible commercial value. The form and the process of Disclosure for employees, contractors, consultants is the same as that used for faculty as described in Part 1. Unlike faculty, there are no exclusions from Disclosure of Inventions. All inventions by employees, contractors and consultants and guest researchers must be disclosed, WHEN SHOULD GUEST RESEARCHERS COMPLETE AN INVENTION AND TECHNOLOGY

6 DISCLOSURE? HOW IS THEIR DISCLOSURE PROCESSED? You should complete an Invention and Technology Disclosure whenever you feel you have discovered something unique with possible commercial value. You should review Part 1 about the criteria for an invention and consult with university officials if you have any questions. Guest researchers (emeritus/retired faculty, visiting scholars/scientists and research collaborators) also file a Disclosure or sign the Disclosure filed by the collaborating faculty inventor or employee inventor. They will identify their institutional affiliation, if any. The university will confirm if their employer has any claim to the invention. There may be other employer claims on the guest s invention as well as the university rights. If so, the university will develop an Inter-Institutional Agreement and work co-operatively with the other party to legally protect the invention through patenting. In the case of industry research collaborators, there typically is a research agreement negotiated prior to the research that indicates the disposition of inventions and identifies background intellectual property, i.e. that intellectual property that each party brought to the research and to which the other party can make no claim. Without such an agreement, the process of determining ownership of any invention is extremely complicated. Guest researchers need not disclose traditional scholarly work, such as publications, works of art, recordings, and software that is created while using university resources for research. IS THE INVENTION EVALUATION PROCESS? The invention evaluation process is described in detail in Part 1 of the Inventor s Guide and rests on two keys questions: Is the invention patentable, i.e. can it legally be protected with a patent issued by the US Patent and Trademark Office? Is the invention commercially useful, i.e. does it address a public need and market demand? Inventions typically arise out of student research in scientific, engineering and technological disciplines. Review Part 1 for details in the Technology Disclosure section. License Agreements WHAT IS THE RELATIONSHIP BETWEEN AN EMPLOYEE INVENTOR AND A LICENSEE? An employee s involvement with a licensee cannot be a formal role or paid role. However, licensees may seek to consult an inventor to better understand the technology and such conversations are not only acceptable, but encouraged. Start-Up Companies/ Conflict of Interest WHAT IF EMPLOYEES WANT TO COMMERCIALIZE SOFTWARE THAT THEY DEVELOPED FOR THE UNIVERSITY? University employees, contract employees and consultants may develop software to meet the needs of the university. Such software is a work for hire, covered by Copyright laws and is owned by the university. Should the university wish to commercialize the software, it may do so. Employees,

7 contract employees and consultants are not free to undertake any commercialization of software or other work product. CAN I PARTICIPATE IN A START-UP COMPANY THAT LICENSES THE UNIVERSITY-OWNED INTELLECTUAL PROPERTY THAT I CREATED AS PART OF MY JOB? Yes, it is possible for employees of the State System to be an owner, employee, officer, agent or consultant of a company that signs a license agreement with your university as described in the Start -up Companies section of Part 1, including the conflict of interest provisions. Contractors and consultants can act similarly. They may be part of a company that licenses university-owned inventions, copyrights and trademarks. CAN STUDENT EMPLOYEES COMMERCIALIZE INTELLECTUAL PROPERTY THAT THEY DEVELOPED FOR THE UNIVERSITY AS PART OF THEIR JOB? When student employees are paid to produce the intellectual property as part of their normal and assigned duties, they are treated as any other employee (see above) as long as the student is employed with the university. If students want to commercialize any intellectual property they created after they end their employment with the university, the university could enter into agreements to do so after the student ends their employment with the university. In evaluating a student s request to undertake this effort, the university applies the same criteria applied to employees who create a start-up company. The university considers the students ability to successfully form a company and take the product to the market. Refer to the Start-up Companies section in Part 1 for additional guidance. Royalty Distribution ARE THERE UNIQUE TERMS FOR DISTRIBUTION OF ROYALTIES TO EMPLOYEES, CONTRACTORS OR CONSULTANTS? Yes. University faculty have collective bargaining rights that define the distribution of net revenues resulting from successful commercialization of an invention (or other intellectual property). Other university employees, contractors and consultants do not have the same rights. The university can establish a policy on the division of net revenues and it can amend that policy from time to time. The university can set one policy for employees and another policy for contract employees or consultants. In the case of guest researchers, the guest may be covered by the policy of their own employer. If the guest researcher is a retired faculty member, then the university can establish a policy or negotiate the division of net revenues..